Dr Michael Larson earned his PhD in Mechanical Engineering from MIT in 1992. He has invented and holds patents on numerous products, and established multiple companies based on his inventions including Khet the Laser Game, the Sleep Shepherd and medical devices to name a few.
He provides engineering consulting and design services for a number of clients, including the design and fabrication of a rocket-port measurement device for Lockheed-Martin, and has served as a product design and failure analysis expert in legal cases.
He has many interests and lots of experience including having a patent case go to the supreme court and raising nearly a million dollars on Kickstarter. IPTJournal spoke to him to discover more about his work.
Tell us more about your inventions, Khet the Laser Game and the Sleep Shepherd.
Khet is a MENSA award-winning laser game (see www.khet.com). The company exceeded $1M in revenues in its second year of operation. Khet has sold over 150,000 units to date and continues to do well in the independent toy market.
The Sleep Shepherd is a comfortable headband that does two things: it aids someone in falling asleep by playing binaural tones through built-in speakers, and gives quantitative information about sleep that we currently can’t get anywhere else.
Doctors define our sleep stages by the rate of our brain activity. The binaural beats have a brain entrainment quality that helps our brains slow naturally–without taking drugs. I’m passionate about helping people sleep ever since my own daughter developed chronic sleep problems. The original Sleep Shepard was invented for her and it has helped her so much my friends and I decided to make it as widely available as possible. Over 10,000 Sleep Shepherd units have since been sold.
What advice do you have for aspiring inventors who have lots of ideas for new products but aren’t sure how to take the first step towards making any of their ideas a reality?
My most fervent advice is to be persistent! You can do this!
The details will, of course, vary on the type of idea. Since you’re talking about products, it is usually a good idea to create a prototype. Not only will trying to give your idea form and function help you in refining parts of it, it will also give you a tangible way of helping others to understand it and appreciate its importance. Even if you can’t make an exact embodiment of what you have in mind, it is important to build something that demonstrates the core features of your product -what makes it different from other things on the market. When I talk about conveying the product idea to others, it’s because these days there are few if any Lone Rangers in the product development business. You’re going to have to trust other people to do things for you, and with you, along your journey. Because not everyone is as trustworthy as you (thankfully most people are ethical) you will want to take some steps to protect your idea. A provisional patent, explained at USPTO.gov, is a good first step that can cost as little as $150.
For inventors with minimal capital at their disposal, how would you recommend taking a product idea to market? What channels are available for the ‘little’ guy?
Assuming you’re thinking about a consumer product, instead of say a medical device with rigorous regulatory requirements, a great channel to consider on a shoestring budget is crowdfunding. The largest sites are Kickstarter and Indiegogo. My team has used both and found that the online helps are sufficient for figuring out how to carryout a campaign, i.e., I don’t recommend that you hire someone to do this for you. The most important piece of the presentation is an informative video. I’ve seen people have success with polished productions and with cellphone videos–it is more about the content and connection with the audience. You can check out two that my team put together, the first has an information packed video, the second one a fun presentation, but both were produced without hiring anyone outside our happy band: https://www.indiegogo.com/projects/sleep-shepherd-blue-a-tracker-to-help-you-sleep#/
How do you determine when intellectual property is worth patenting? What are your thoughts on the open source movement?
Because patent prosecution (the process of getting a patent approved by the Patent Office) can be so expensive, often $30-$50k using an experienced lawyer, the question about whether to seek a patent is an important one. The answer depends primarily on the market and industry. For example, if you have a new toy or game in mind, you may want to skip the patent knowing that the life of a typical game is only two years (less than the time it will take to even get a patent issued) and the profit margins are usually so low that you’ll have a hard time recouping the costs. If, on the other hand, you have an idea for a surgical instrument you will certainly need patent protection as you lineup they investors and strategic partners to protect you in the process of bringing the device to market.
In general I am a fan of the open source movement as the ideal of sharing can benefit everyone. However our current business, governmental, and societal structures are not amenable to supporting the open source development of many types of projects, such as those requiring large resources, think about the design of new medical imaging machines, and those which touch upon things that are already proprietary. With continued concerted effort I do believe that we will all benefit from more and more open source collaboration in many realms.
You mentioned that you had a patent case go to the supreme court, what was that about?
Unfortunately there is no “patent police” to ride in and arrest someone who infringes on your patent. When a large company ripped off my laser boardgame, KHET, they left me no choice but to file a lawsuit. I figured if you go to the expense to get a patent then you need to protect it. Also unfortunately, I discovered why in legal circles patent litigation is referred to as “the sport of kings.” I’m told that 95% of patent cases settle, I am in that rarefied 5% group who gets to spend a lot of money. My case did go to the Supreme Court– although it isn’t settled yet (it’s only been in our legal system for 11 years after all)–I’m happy to report that my case has been precedent-setting in helping the courts to reassess how the little guy can operate in markets dominated by big, deep-pocketed companies. Over the last 20 years or so there was a reaction in the legal system to “patent trolls” that in some ways went too far and ended up leaving individual inventors out in the cold. I’m glad to say that seems to be changing.
At what stage of the invention process did you start thinking about getting a patent? Besides patents, do you own/intend to apply for any other related intellectual property rights for your inventions?
I currently have six issued patents and seven more pending for a variety of products, so I do believe there are times that patents are useful. It is best to think about the appropriate ways to protect your inventions as early in the process as possible.
How did you find out that your patent was being infringed, and what did you do upon making such a discovery?
Monitoring for patent infringement can be, as you suggest, difficult. In the case of my laser board game I was sitting at my desk when I got a phone call from a friend in Massachusetts saying he was standing in a Walmart (I was not selling through Walmart at the time) holding a game that, “looks just like your game”. In the ensuing days I got more phone calls, emails, texts and website comments letting me know I had a problem. I consulted with my then brand-new attorney, since my original prosecuting attorney had been washed out of New Orleans with me by Hurricane Katrina. He helped me compose a letter to the infringer to make sure he also knew we had a problem. His unwillingness to talk to me precipitated a reluctant lawsuit. I hope you never have to defend your patents in court!